Trials@uspto.gov Paper 18
`571-272-7822
` Date: March 24, 2021
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NINE ENERGY SERVICE INC.,
`Petitioner,
`v.
`NCS MULTISTAGE INC.,
`Patent Owner.
`____________
`
`IPR2020-01615
`Patent 10,465,445 B2
`____________
`
`
`
`Before JOSIAH C. COCKS, LYNNE H. BROWNE, and
`JAMES A. WORTH, Administrative Patent Judges.
`
`BROWNE, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`571-272-7822
` Date: March 24, 2021
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NINE ENERGY SERVICE INC.,
`Petitioner,
`v.
`NCS MULTISTAGE INC.,
`Patent Owner.
`____________
`
`IPR2020-01615
`Patent 10,465,445 B2
`____________
`
`
`
`Before JOSIAH C. COCKS, LYNNE H. BROWNE, and
`JAMES A. WORTH, Administrative Patent Judges.
`
`BROWNE, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`IPR2020-01615
`Patent 10,465,445 B2
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`
`I.
`INTRODUCTION
`NINE ENERGY SERVICE INC. (“Petitioner” or “Nine”), on
`September 11, 2020, filed a Petition to institute inter partes review of claims
`1–57 of U.S. Patent No. 10,465,445 B2 (Ex. 1001, “the ’445 patent”). Paper
`1 (“Pet.”). NCS MULTISTAGE INC. (“Patent Owner” or “NCS”) filed a
`Preliminary Response to the Petition on December 29, 2020. Paper 7
`(“Prelim. Resp.”).
`Having considered the arguments and evidence of record, and for the
`reasons explained below, we exercise our discretion under 35 U.S.C.
`§ 314(a) and deny institution of post-grant review.
`A. Real Parties in Interest
`Petitioner indicates that it is the real-party-in-interest. Pet. 2. Patent
`Owner indicates that it is the real-party-in-interest. Paper 5, 2.
`B. Related Matters
`Petitioner indicates that the ’445 patent is the subject of NCS
`Multistage Inc. v. Nine Energy Service, Inc., Case No. 6:20-cv-00277 (W.D.
`Tex.) (the “parallel district court proceeding” or “Nine litigation”); NCS
`Multistage Inc. v. Innovex Downhole Solutions, Inc., Case No. 6:20- cv-
`00280 (W.D. Tex.); NCS Multistage Inc. v. TCO AS, et al., Case No. 6:20-
`cv-00622 (W.D. Tex.) (see, e.g., Exs.1006, 1007) (“TCO litigation”); NCS
`Multistage Inc. v. Allamon Tool Company Inc., Case No. 6:20-cv- 00699
`(W.D. Tex.); NCS Multistage Inc. v. Packers Plus Energy Services, Inc., et
`al., Case No. 6-20-cv-00700 (W.D. Tex.); and NCS Multistage Inc. v.
`Permian Petrolink, LLC, Case No. 6:20-cv-00701 (W.D. Tex.). Pet. 2–3.
`Petitioner further indicates that the ’445 patent is also the subject of
`PGR2020-00077 and PGR2020-00078. Id. at 3.
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`C. The ’445 Patent
`The ’445 patent “relates to a method and apparatus for sealing well
`casings.” Ex. 1001, 1:17–18. Specifically, the method and apparatus
`“relates to an improved rupture disc assembly and improved rupture disc
`within the assembly wherein the rupture disc, when installed in the wellbore,
`can be ruptured by engagement with an impact surface of a tubular once a
`rupturing force is applied to the disc, such as by hydraulic fluid under
`pressure.” Id. at 2:1–8.
`Figure 2 of the ’445 patent is reproduced below:
`
`Figure 2 shows a cross-sectional view of rupture disc assembly 10 for
`installation of a casing sting. Ex. 1001, 3:41–43. Rupture disc assembly 10
`consists of upper tubular member 16 having upper fluid passageway 12
`coupled to lower tubular member 18 having lower fluid passageway 14
`formed in its interior to form a continuous fluid passageway. Id. at 7:31–38.
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`Rupture disc 30 is sealingly engaged between upper tubular member 16 and
`lower tubular member 18. Id. at 7:37–38. The outer wall of lower tubular
`member 18 overlaps at least a portion of the outer wall of lower tubular
`member 16 with the tubular members being mechanically joined together at
`20 by a threaded connection. Id. at 7:40–44. Rupture disc 30 consists of
`cylindrical portion 34 continuous with hollow, hemispherical dome portion
`32. Id. at 8:11–12. Portion 32 has concave surface 38 facing down-hole and
`convex surface 36 facing up-hole and cylindrical portion 34 terminates in
`circumferential edge 39. Id. at 8:8–13.
`Rupture disc assembly 30 is used in a method of installing a casing
`string or to float a casing. Ex. 1001, 5:50–52. Once the casing has landed
`rupture disc 30 is burst by pressuring the casing from the surface. Id. at
`6:24–26. After rupture, the inside diameter of the casing string in the region
`of rupture disc assembly 10 is essentially the same as this in the remainder
`of the casing. Id. at 6:62–65.
`D. Illustrative Claim
`Petitioner challenges claims 1–57 of the ’445 patent. Claims 1, 22
`and 50 are independent. Claim 1, reproduced below, is illustrative of the
`challenged claims.
`1. A float tool configured for use in a casing string for a wellbore
`containing a well fluid, the casing string having an
`internal diameter that defines a fluid passageway between an
`upper portion of the casing string and a lower portion of the
`casing string, the float tool comprising:
`a rupture disc assembly comprising (i) a tubular member
`having an upper end and a lower end, the upper and lower ends
`configured for connection in-line with the casing string and (ii) a
`rupture disc having a rupture burst pressure and in sealing
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`engagement with a region of the tubular member within the upper
`and lower ends,
`wherein the rupture disc is configured to rupture when
`exposed to a rupturing force greater than the rupture burst
`pressure and the region of the tubular member where the rupture
`disc is attached has a larger internal diameter than the internal
`diameter of the casing string and is parallel to the internal
`diameter of the casing string.
`
`Ex. 1001, 14:6–23.
`E. The Asserted Grounds of Unpatentability
`Petitioner asserts that the challenged claims are unpatentable on the
`following grounds:
`
`Claims Challenged
`
`1, 5, 6, 28, 29, 33, 34
`1–3, 8–18, 22–31, 36–46, 50–57
`1–3, 5–20, 22–31, 33–48, 50–57
`4, 32
`21, 49
`
` 35
`U.S.C. § References
` 102
`Frazier1
` 103
`Rogers2, Frazier
` 103
`Rogers, Entchev3
` 103
`Rogers, Entchev, Lembcke4
` 103
`Rogers, Entchev, Fishbeck5
`
`Pet. 11. Petitioner supports its challenge with the Declaration of Nathan
`Meehan, PhD, PE, dated September 11, 2020 (“Meehan Declaration”)
`(Ex. 1002).
`
`
`
`1 U.S. 9,194,209 B2 issued November 24, 2015. Ex. 1009 (“Frazier”).
`2 H.E. Rogers, Buoyancy Assist Extends Casing Reach in Horizontal Wells,
`Society of Petroleum Engineers, SPE 50680, 1998. Ex. 1007 (“Rogers”).
`3 WO 2010/120774 A1 published Oct. 21, 2010. Ex. 1010 (“Entchev”).
`4 US 5,526,884 issued June 18, 1996. Ex. 1012 (“Lembcke”).
`5 US 8,800,660 B2 issued August 12, 2014. Ex. 1011 (“Fishbeck”).
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`II. ANALYSIS
`A. Discretion Under 35 U.S.C. § 314(a)
`Patent Owner argues that “[t]he six factors enumerated in the Board’s
`Apple Inc. v. Fintiv, Inc.6 decision weigh heavily in favor of denying
`institution.” Prelim. Resp. 3. Petitioner disagrees. Prelim. Reply 1.
`1. Legal Standards
`35 U.S.C. § 314(a) states that
`[t]he Director may not authorize an inter partes review to be
`instituted unless the Director determines that the information
`presented in the petition filed under section 321, if such
`information is not rebutted, would demonstrate that it is more
`likely than not that at least 1 of the claims challenged in the
`petition is unpatentable.
`In exercising the Director’s discretion under 35 U.S.C. § 314(a), the
`Board may consider “events in other proceedings related to the same patent,
`either at the Office, in district courts, or the ITC.” Consolidated Trial
`Practice Guide, Nov. 19 Ed., 58, available at https://www.uspto.gov/Trial
`PracticeGuideConsolidated; 84 Fed. Reg. 64, 280 (Nov. 21, 2019). The
`Board’s precedential NHK Spring decision explains that the Board may
`consider the advanced state of a related district court proceeding, among
`other considerations, as a “factor that weighs in favor of denying the Petition
`under § 314(a).” NHK Spring Co., Ltd. v. Intri-Plex Techs., Inc., IPR2018-
`00752, Paper 8 at 20 (PTAB Sept. 12, 2018) (precedential).
`The Board’s precedential Fintiv decision identifies several factors to
`be considered when analyzing issues related to the Director’s discretion to
`deny institution, with the goal of balancing efficiency, fairness, and patent
`
`6 Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB March 20,
`2020) (precedential) (“Fintiv”).
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`quality. See Fintiv at 5‒6. These factors include: (1) whether a stay exists
`or is likely to be granted if a proceeding is instituted; (2) proximity of the
`court’s trial date to the Board’s projected statutory deadline; (3) investment
`in the parallel proceeding by the court and parties; (4) overlap between
`issues raised in the petition and in the parallel proceeding; (5) whether the
`petitioner and the defendant in the parallel proceeding are the same party;
`and (6) other circumstances and considerations that impact the Board’s
`exercise of discretion, including the merits. Id.
`2. Fintiv Factors
`In determining whether to institute trial in this proceeding, we
`consider each of the factors set forth in Fintiv below.
`a. Factor 1: whether a stay exists or is likely to be granted if a
`proceeding is instituted
`Petitioner asserts that “[t]here is nothing to suggest that the Court will
`not grant a stay, or that NCS would refuse to agree to a stay in view of this
`petition.” Pet. 12. Patent Owner responds that “Nine has not sought a stay
`of the district court litigation pending the Board’s review” and that “if it did,
`NCS would oppose any stay and any request would likely be denied as
`Judge Albright has not granted a single request for a stay pending post-
`issuance reviews of patents.” Prelim. Resp. 4–5 (citing Ex. 2005). Patent
`Owner asserts further that “given the advanced stage of the Nine litigation”
`this factor weighs in favor of denying institution. Id. at 5.
`Our precedential guidance instructs us to consider whether the court
`has granted a stay of the parallel proceeding, or whether evidence exists that
`a stay may be granted upon institution. Fintiv, Paper 11 at 5–6. As it stands,
`the record lacks any evidence to suggest that a stay has been granted or may
`be granted in the future.
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`For these reasons, we determine that the facts underlying this factor
`are neutral.
`
`b. Factor 2: proximity of the court’s trial date to the Board’s
`projected statutory deadline for a final written decision
`Petitioner asserts that “[t]here is reason to believe that the statutory
`deadline for this IPR (March 11, 2022) will occur before the trial date”
`because “the Court’s current scheduling order sets trial for October 18, 2021,
`[but] that date is likely to move.” Pet. 12. Petitioner asserts further that
`“Nine has filed a motion to transfer venue, that if granted, will lead to a new
`trial date as set by the transferee court” and that “NCS has suggested
`consolidation of several other cases with its case against Nine.” Id. (citing
`Ex. 1017; Ex. 1019, 11–12). According to Petitioner, “the consolidated
`cases would not be ready for trial until after May 24, 2022, well after the
`statutory deadline.” Id. (citing Ex. 1021 ¶ 13).
`Patent Owner responds that “[s]hould the Board institute review in
`this proceeding, a Final Written Decision would issue months after the
`October 2021 trial in the district court (i.e., March 2022), where the issues in
`this Petition – and more – will have already been resolved.” Prelim. Resp. 5.
`Patent Owner responds further that “Judge Albright will likely deny Nine’s
`motion to transfer for convenience — from the Western District of Texas to
`the Southern District of Texas — because there is no compelling reason to
`transfer the case” and that “there are compelling arguments for why the case
`should remain in the WDTX including the preparation by the parties and the
`court for a Markman hearing in less than three weeks.” Id. at 5–6 (citing Ex.
`1018). In addition, Patent Owner contends that “even if Nine succeeded in
`transferring the case to the SDTX, a trial probably would still be scheduled
`before the Board’s Final Written Decision deadline” because “[t]he Nine
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`litigation would not start from scratch if it were transferred; it would likely
`pick up where the WDTX case left off, which would be post-Markman.” Id.
`at 6.
`
`Turning to Petitioner’s argument regarding consolidation, Patent
`Owner responds that “[a]t this point there is only one co-pending case
`remaining, NCS Multistage Inc. v. TCO AS et al., No. 6:20-cv-00622,
`WDTX (the “TCO litigation”)” and “[t]here is no reason to believe Judge
`Albright will extend the Nine litigation schedule for the TCO litigation.”
`Prelim. Resp. 6. In support, Patent Owner explains that “Judge Albright has
`not done that, the Markman hearing is going forward in three weeks, and
`Judge Albright has issued separate trial schedules for each case.” Id.
`Rather, Patent Owner asserts that there is a good chance Judge Albright will
`shorten the TCO litigation schedule to align with the Nine litigation schedule
`because it will resolve most of the claim construction issues including
`addressing the same validity challenges at issue in the Petition. Id. at 6–7.
`If we institute post-grant review in this proceeding, our Final Written
`Decision will be due in March of 2022. As noted by both Patent Owner and
`Petitioner, trial in the related district court proceeding is set for October 18,
`2021. Ex. 1016, 3. We agree with Patent Owner based on the evidence of
`record, there is no evidence to suggest that trial will be delayed. Thus, we
`conclude that the record before us reasonably establishes that the trial will
`commence 5 months before our Final Witten Decision would be due.
`On this record, we determine that the facts underlying this factor
`weigh in favor of denying institution.
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`c. Factor 3: investment in the parallel proceeding by the court
`and the parties
`Petitioner asserts that “[t]here has been little investment in the parallel
`district court litigation between Nine and NCS.” Pet. 12. Petitioner asserts
`further that “[t]his petition is being filed on the same day as Nine’s invalidity
`contentions.” Id. at 12–13.
`Patent Owner responds that “[i]n the Nine litigation, the parties have
`expended considerable resources, and that will only continue as the Board
`considers institution.” Prelim. Resp. 7–8. Specifically, Patent Owner asserts
`that “[a]s of the filing of this paper, the parties in the Nine litigation have
`briefed motions, exchanged infringement contentions and invalidity
`contentions, and exchanged substantial document productions.” Id. at 8.
`According to Patent Owner, “Nine served contentions with over 60 prior art
`references” and “the parties have already completed Markman briefing and
`conducted claim construction discovery (including the depositions of the
`other’s expert).” Id. (citing Ex. 2003). In addition, Patent Owner asserts
`that “[t]he parties fully briefed Markman on 10 claim terms, [with] both
`parties proposing constructions for 7 out of the 10 terms.” We note that the
`Markman hearing was held January 14, 2021, and the Claim Construction
`Order issued that same day. Ex. 2017.
`
`On the record before us, we agree with Patent Owner that the parties
`and the Court have already expended “considerable resources and that [such
`expenditures] will only continue as the Board considers institution.” Prelim.
`Resp. 7. For instance, the parties have exchanged initial infringement and
`invalidity contentions and have participated in a claim construction hearing,
`and the Court issued a claim construction order. Id. at 8. We recognize,
`however, that considerable effort remains to be completed in the Nine
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`litigation because discovery is in the early stages and is not set to be
`completed until July 29, 2021. Id. Considering the foregoing, the facts
`underlying this factor weigh slightly in favor of denying institution.
`d. Factor 4: overlap between issues raised in the petition and
`in the parallel proceeding
`Petitioner asserts that “[t]here is no overlap between the issues raised
`in this petition and in the parallel proceeding.” Pet. 13. Patent Owner
`responds that “the Nine litigation and the Petition do not just ‘substantially
`overlap,’ as to invalidity issues, they completely overlap.” Prelim. Resp. 9.
`According to Patent Owner, should trial in this proceeding be instituted
`“Judge Albright and the Board will simultaneously consider claim
`construction under the Phillips standard (including indefiniteness for the
`same terms), and deal with the same prior art and combinations of art.” Id.
`Patent Owner also contends that “the Board should exercise its
`discretion in denying institution on the unasserted claims in the Nine
`litigation, i.e., claims 1–13, 16–21, 26, 32–35, 44, 45, 47–49, and 54”
`because it “is not going to assert these claims against Nine, Nine’s real
`parties-in-interest, or Nine’s future customers, as to the accused device.”
`Prelim. Resp. 10. Patent Owner asserts further that “Nine’s challenges
`against these claims are substantially cumulative of the issues Judge
`Albright will address in the Nine litigation because they relate to
`substantially the same subject matter and the same prior art.” Id.
`Under Fintiv, “if the petition includes the same or substantially the
`same claims, grounds, arguments, and evidence as presented in the parallel
`proceeding, this fact has favored denial” because “concerns of inefficiency
`and the possibility of conflicting decisions [are] particularly strong.” Fintiv,
`12. Although this Petition involves claims not involved in the related
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`district court proceeding, Patent Owner’s offer to stipulate that it will not
`assert those claims mitigates Petitioner’s concerns. Ex. 1024. Even without
`this offer, this Petition is directed to substantially the same grounds,
`arguments, and evidence as presented in the related district court proceeding.
`See Pet. 11; see also Ex. 2003. These facts raise concerns of inefficiency
`and the possibility of conflicting decisions.
`On this record, we determine that the facts underlying this factor
`weigh in favor of denying institution.
`e. Factor 5: whether the Petitioner and the defendant in the
`parallel proceeding are the same party
`The record shows that Petitioner and the defendant in the related
`district court proceeding are the same. Pet. 2, 13. Thus, this factor weighs
`in favor of denying institution.
`f. Factor 6: other circumstances that impact the Board’s
`exercise of discretion, including the merits7
`When considering whether to exercise discretion to deny a petition,
`we undertake a balanced assessment of all relevant circumstances in the
`case, including the merits. Fintiv, 14. Although we need not undertake a
`full merits analysis when evaluating Fintiv Factor 6, we consider the
`strengths and weaknesses of the merits, where stronger merits may favor
`institution and weaker merits may favor exercising discretion to deny
`
`7 Patent Owner asserts that “[a]s an additional reason to deny institution,
`Nine relies on prior art and arguments already considered by the Office
`during original prosecution of the ’445 patent.” Prelim. Resp. 11. As noted
`by Patent Owner, such considerations are properly considered “pursuant to
`35 U.S.C. § 325(d).” Id. Accordingly, we do not discuss this assertion in
`the context of our Fintiv analysis. As we determine that a holistic analysis
`of the Fintiv factors favors denial on institution we need not consider Patent
`Owner’s assertions pursuant to § 325(d).
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`institution. Id. at 15–16. We also consider the other circumstances
`identified by the parties as pertinent to exercise of discretion.
`i. Anticipation By Frazier
`Petitioner alleges that claims 1, 5, 6, 28, 29, 33, and 34 are anticipated
`by Frazier. Pet. 21–29. Patent Owner asserts that Petitioner’s challenge “is
`fundamentally deficient because Nine relies on Frazier’s Fig. 6 tool and
`argues without any support that the tool is connected in-line with [the]
`casing string.” Prelim. Resp. 23 (citing Pet. 22–28).
`Independent claims 1 and 28 require “a tubular member having an
`upper end and a lower end, the upper and lower ends configured for
`connection in-line with the casing string.” Ex. 1001, 14:11–14; 16:6–9.
`This limitation does not require a tool connected in-line with a casing string
`as argued by Patent Owner. Rather, it requires a tubular member (such as
`Frazier’s tool) that is configured for connection in-line with a casing string.
`The Petition states that in Frazier “[t]he upper and lower ends [of the rupture
`disk assembly] are configured for connection in-line with the casing string
`by having interior and exterior threads, respectively, allowing it to be
`screwed in-line with a casing string.” Pet. 22 (citing Ex. 1001, Abstract;
`2:25–41, 10:11–23, 11:46–53, 12:57–64). Petitioner’s showing is sufficient
`to demonstrate at this stage of this proceeding that Frazier meets this
`limitation.
`Claim 28 further requires a rupture disc “configured to disengage
`from sealing engagement when exposed to a pressure greater than a
`hydraulic pressure in the casing string after the casing string has been
`positioned in the wellbore.” Ex. 1001, 16:13–16. Patent Owner asserts that
`Petitioner’s mapping of this limitation to “Frazier’s sliding sleeve rupturing
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`the frangible disc by an impact force” “has nothing to do with how the
`rupture disc is ruptured.” Prelim. Resp. 25. Patent Owner’s argument raises
`the issue of what type of pressure is required in order to meet this limitation.
`We have conducted an initial review of Petitioner’s challenge based
`on Frazier and determine that Petitioner’s challenge based on Frazier for
`claim 1 and its dependent claims has merit.
`ii. Obviousness Based on Rogers and Frazier
`Petitioner alleges that claims 1–3, 8–18, 22–31, 36–46, and 50–57 are
`unpatentable over Rogers and Frazier. Pet. 29–48. Patent Owner asserts
`that Petitioner fails to allege sufficient motivation for the proposed
`combination. Prelim. Resp. 26. Specifically, Patent Owner asserts that
`“[t]he Petition does not address how the combination of Rogers and Frazier
`would be suitable in light of the debris from Frazier’s disc, including the
`impact that broken pieces of Frazier’s sealing member would have on
`Rogers’ float valve.” Id. at 27. We find Patent Owner’s assertions credible.
`Upon our initial review of this ground, we find that Petitioner’s
`reasoning in support of the proposed combination is weak. This, in turn,
`suggests that the merits of this challenge are weak.
`iii. Obviousness Based on Rogers and
`Entchev
`Petitioner alleges that claims 1–3, 5–20, 22–31, 33–48, and 50–57 are
`unpatentable over Rogers and Entchev. Pet. 48–71. Patent Owner asserts
`that Petitioner fails to allege sufficient motivation for the proposed
`combination. Prelim. Resp. 28. Specifically, Patent Owner asserts that
`“[t]he Petition’s motivation to combine argument does not discuss how the
`combination of Entchev and Rogers would be suitable in light of the debris
`resulting from Entchev’s technology, including the impact that broken
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`pieces of Entchev’s bridge plug would have on Rogers’ float valve.” Id. at
`29. Thus, according to Patent Owner, “[t]he Petition has failed to allege that
`Rogers’ float valve would remain operable with Entchev’s bridge plug.” Id.
`We find Patent Owner’s assertions credible.
`Upon our initial review of this ground, we find that Petitioner’s
`reasoning in support of the proposed combination is weak. This, in turn,
`suggests that the merits of this challenge are weak.
`iv. Obviousness Based on Rogers, Entchev, and
`Lembcke and Obviousness Based on Rogers,
`Entchev, and Fishbeck
`Petitioner alleges that claims 4 and 32 are unpatentable over Rogers,
`Entchev, and Lembcke and that claims 21 and 49 are unpatentable over
`Rogers, Entchev, and Fishbeck. Pet. 71–74. Patent Owner asserts that “[f]or
`the reason discussed . . . with respect to Ground C [i.e. challenge based on
`Rogers and Entchev], institution on Grounds D [challenge based on Rogers,
`Entchev, and Lembcke] and E [challenged based on Rogers, Entchev, and
`Fishbeck] should be denied.” Prelim. Resp. 33.
`Upon our initial review of these grounds, we find that neither
`Lembcke nor Fishbeck cure the deficiencies in the challenge based on
`Rogers and Entchev. This suggests that the merits of these challenges are
`weak.
`
`v. Summary
`At this stage of this proceeding, our initial review of the merits of
`Petitioner’s challenge reveals that Petitioner’s first challenge potentially has
`merit but Petitioner’s remaining challenges are weak. In accordance with
`our precedent institution may be granted if Petitioner demonstrates a
`reasonable likelihood of prevailing with respect to one claim. Thus, the
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`facts underlying this factor are neutral.
`g. Holistic Analysis of Fintiv Factors
`We undertake a holistic analysis of these factors, considering
`“whether efficiency and integrity of the system are best served by denying or
`instituting review.” Fintiv, Paper 11 at 6. In this case, all of the factors
`weigh in Patent Owner’s favor except for the first and sixth factors, which
`are neutral. Specifically, the trial date, investment, overlap, and same parties
`factors outweigh the merits factor in favor of exercising discretion to
`institute inter partes review.
`A balancing of the facts and circumstances as discussed above leads
`us to conclude, on this record, that the inefficient duplication of efforts here
`is likely. Accordingly, we determine that the circumstances presented weigh
`in favor of denying institution under 35 U.S.C. § 314(a).
`III. CONCLUSION
`Taking account of the information presented in the Petition, the
`Preliminary Response, and the evidence of record, we exercise our
`discretion under § 314(a) and deny institution. Accordingly, the Petition is
`denied, and no trial is instituted.
`IV. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that the Petition is denied, and no trial instituted.
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`IPR2020-01615
`Patent 10,465,445 B2
`
`For PETITIONER:
`
`Parker Hancock
`VINSON & ELKINS LLP
`phancock@velaw.com
`
`For PATENT OWNER:
`
`Dipu Doshi
`Jonathan England
`BLANK ROME LLP
`ddoshi@blankrome.com
`jwengland@blankrome.com
`
`
`
`17
`
`
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